Material Concerning Recent IP Precedent - On requirements regarding possibility of implementation f


(1) Introduction

There are some cases having the limitation to describe the theoretical grounds of an invention in the detailed description of the specification due to the mechanism of the invention as filed and the theoretical grounds, etc. not having been able to be clearly specified at the time when the application was filed. In relation to claim inventions, such point may create problems regarding the possibility of implementation as required for the description of a specification (Article 42(3) of the Korean Patent Act) and scope of invention for claims supported by the detailed description upon explanation of the range of right (Article 42(4)(i) of the Korean Patent Act).

Concerning an invalidation trial against a recent registered patent requested based on the above-mentioned point, the Korean Supreme Court has reversed the decision of the Patent Court that had invalidated the registered patent due to violating Article 42(3) and Article 42(4)(i) of the Korean Patent Act, has reconfirmed the existing position and has further strengthened such position (Supreme Court Decision 2014HU2061 on May 26, 2016).

In the following, we will briefly explain the Supreme Court Decision and look into the meaning of this decision.

(2) The Example of the Supreme Court Decision

1) Case Summary (main description of claims and detailed description)

Claim 1 of the registered patent invention describes ‘an electrochemical biosensor comprising a sample introduction part wherein a path part and an airing part for introducing the sample are crossly formed and a protrusion is formed at the point where the path part and the airing part for introducing the sample are met.’

In the detailed description of the specification in relation to the above point, it is described that the position of the protrusion is ‘the point where the path part and the airing part for introducing the sample are met’ and it ‘can be formed on an extension of the path part for introducing the sample but is not limited by this. For example, it can be formed with the same angle as the path part and the airing part for introducing the sample.’ Also, a cross shape of the path part and the airing part for introducing the sample and a manufacturing method thereof are described.

In addition, in the detailed description, regarding method of use, it is described that ‘Upon contacting a sample with an end portion of a path part for introducing a sample, the sample is introduced into the path part by capillary action. The sample that fills up the path part for introducing the sample supplies to the protrusion and then supplies to an airing part again.’

In the drawings of the specification, a shape, wherein a protrusion is formed on the path part and the airing part for introducing the sample and an extension of the path part for introducing the sample, is illustrated, but in the previous descriptions, there is no specific description regarding a size and a shape of the protrusion.

Viewing the detailed description, in addition to this, it is described that ‘as said protrusion provides a little available space to the point where the path part and the airing part for introducing the sample are met, it plays a role to minimize an air pocket phenomenon that may occur at a corner part (or cross point part) where the path part for introducing the sample is folding. As the corner part (or cross point part) where the path part for introducing the sample is folding is the part contacting with an electrode, if an air pocket is made here, there is a problem that accurate measurement is not possible.’ and ‘As a protrusion is additionally installed, an air pocket phenomenon at the point across the path part and the airing part for introducing the sample can be avoided.’

2) Judgment of Supreme Court

Even though there is no specific description regarding the size and the shape of the protrusion in the detailed description, technical constitutions of the path part and the airing part for introducing the sample and the protrusion are illustrated in the drawings. Accordingly, the Korean Supreme Court has judged that referring to the detailed description and drawings, a skilled person would have no impediment for producing and using protrusions by selecting appropriate positions, sizes and shapes as required.

Also, the Korean Supreme Court has judged as follows: As it can be understood that an ‘air pocket phenomenon’ is a term indicating the phenomenon of unnecessary air existing during liquid piping, it was well known before the filing of the corresponding application that such could easily happen at the part where a pipe is folding. Accordingly, a skilled person could have understood the meaning and generating positions of such air pocket phenomenon and could have sufficiently understood that Claim 1 has the effect of minimizing or relieving the air pocket phenomenon through the ‘protrusion’ which is an available space to relieve rapid liquid change at the point across the path part and the airing part for introducing the sample from the detailed description, etc.

To summarize, as long as a skilled person could have produced and used the product described in Claim 1 and could have sufficiently anticipated the generation of effects from the detailed description, even though the basis of the air pocket phenomenon or theoretical grounds as to whether the above-mentioned phenomenon can be relieved through a protrusion are not specifically disclosed in the detailed description, the Korean Supreme Court has judged that the description requirements for the detailed description as regulated by law have been fulfilled.

Also, since it is considered that, for a skilled person, on the basis of the technical level at the time of the filing of the corresponding application, the content corresponding to the description of Claim 1 described in the detailed description and the content described in the detailed description could have been expanded according to circumstance up to the range of the invention described in the claim, the Korean Supreme Court has judged that the claim could accordingly be supported by the detailed description.

(3) Significance

This decision adheres to the existing position that in relation to the description requirement of the specification, as long as a skilled person could have produced and used a product on the basis of the technical level at the time of the filing of the corresponding application and could have sufficiently anticipated generation of the effects thereby, even though specific theoretical grounds are not described in the detailed description, the description requirements for the detailed description are fulfilled. Also, if the content described in the detailed description could be expanded up to the range of the invention described in the claim, the claim could accordingly be supported by the detailed description. Consequently, we believe this to be suggestive that in examinations and lower level judgments, to strictly manage the description requirements for the specification and the interpretation scope of right, the Korean Supreme Court has presented a specific standard hereby.

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